Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 21st, 2026 has been entered.
Response to Amendment
The Amendment filed on August 21st, 2026 has been entered. Claim 1 and claim 2 are pending in the application.
The rejection of claim 1 and claim 2 under 35 U.S.C. 103 as obvious over Hulse (US 20140261565 A1) is maintained.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 and claim 2 are rejected under 35 U.S.C. 103 as being unpatentable over Hulse (US 20140261565 A1).
With regard to claim 1 and claim 2, Hulse discloses cleaning methods and solvent compositions (see Abstract). Hulse further discloses a method of providing a solvent composition comprising at least 50wt% of 1233zd (see claim 1) and the method step of contacting the composition with a metal part of an aircraft through spraying (see claim 2). Hulse further discloses HCFO-1233zd as general 1-chloro-3,3,3-trifluoro-propene and further teaches HCFO-1233zd includes within its scope cis HCFO-1233zd, also referred to as 1233zd(Z) (see [0020]).
Hulse further teaches the composition may consist essentially of either 1233zd(E) or 1233zd(Z) (see [0022]), which were found to provide unexpected advantageous properties when used (see [0022]).
While the examples disclosed describe further solvents, such as methanol (see Examples 150-152) or ethanol (see Examples 154-156), the combination disclosed in the instant claims would have been obvious as Hulse states that the composition may consist essentially of 1233zd(Z). Lastly, Hulse discloses the method may comprise spraying a metal part utilizing the above solvent as a propellant or pressurized gases, such as nitrogen and carbon dioxide (see [0025]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the 1233zd(Z) as the only component of the composition, as disclosed by Hulse. Hulse discloses a method of providing a solvent composition comprising at least 50wt% of 1233zd (see claim 1) and further discloses the composition may consist essentially of either 1233zd(E) or 1233zd(Z) (see [0022]), which were found to provide unexpected advantageous properties when used (see [0022]). The reference does not explicitly state only two components, however, Hulse states that according to some aspects of the invention, the solvent includes a co-solvent (see [0025]). This is stated as “some aspects” and therefore would lead to a conclusion that not all aspects of the invention must contain this co-solvent. The composition consisting essentially of either 1233zd(E) or 1233zd(Z) reads on the claimed invention as the co-solvent disclosed by Hulse is not explicitly necessary for the composition. Therefore, the invention as a whole would have been obvious to one of ordinary skill in the art.
Response to Arguments
Applicant's arguments filed August 21st, 2026 have been fully considered but they are not persuasive.
Applicant argues that claim 1 requires spraying, onto car/vehicle/transportation means, an aerosol composition that "consists of"' (Z)-1-chloro-3,3,3- trifluoropropene and a gas propellant selected from N2, compressed air, CO2, and argon. Claim 2 applies the same closed aerosol composition to washing a braking device of car/vehicle/transportation means. Thus, the claims require a particular two-component aerosol composition used in a particular spraying method.
As stated above, Hulse further teaches the composition may consist essentially of either 1233zd(E) or 1233zd(Z) (see [0022]). Further, Example 20 of Hulse discloses a composition comprising only 1233zd(Z) (see Example 20, [0022]). Hulse further discloses the method may comprise spraying a metal part utilizing the above solvent as a propellant or pressurized gases, such as nitrogen and carbon dioxide (see [0025]). Hulse further discloses it would be advantageous to select solely 1233zd(Z) in certain applications due to specific properties, such as boiling point and heat of vaporization, which make it attractive under particular circumstances (see [0022]).
Selecting solely 1233zd(Z) and the disclosed spraying method of Hulse would result in a composition having the property of composition and method that are effective to remove the desired amount and type of contaminant from the metal part, including by solvating said contaminant and removing same by removing at least a portion of the solvent composition from the metal part (see [0008]).
Applicant further argues that 1233zd(Z) does not evaporate immediately when using the gas propellants recited in the claims. Hulse discloses the composition evaporates in less than 30 seconds, preferably less than about 10 seconds (see [0028]). As there is a measurable amount of time between the application of the composition to a surface and the evaporation of said composition, it can be concluded that the composition of Hulse does not evaporate immediately and thus would remain on the surface for a period of time.
Applicant further argues that Hulse fails to disclose the composition does not evaporate immediately, remains in the form of a solution, was rod-like in shape when sprayed, and arrived as a solution at the item being sprayed, where the solution continued to exist for a given period of time. Even if this argument was found to be persuasive, which the Examiner does not concede, the Applicant has failed to disclose the exact parameters which cause these remarkable results. The examples in the instant specifications are not commensurate in scope with the instant claims. No claim is made to the evaporation time, the shape when sprayed, or the period of time the solution continues to exist once applied to the surface to the cleaned.
Applicant further argues that Hulse does not teach that the Z-isomer is critical for achieving the claimed localized wetting behavior when used with the recited gas propellant. Applicant further argues that Hulse therefore does not provide a reason to select 100% 1233zd(Z), exclude 1233zd(E), combine that selected Z-isomer with one of the claimed gas propellants, and expect the resulting aerosol to remain liquid, stream-like or rod- like, and capable of localized wetting from a distance.
While Hulse discloses both 1233zd(Z) and 1233zd(E) and further does not disclose the claimed benefits of Applicant’s invention, routine experimentation would have led one of ordinary skill in the art to the claimed invention. As Hulse discloses only two options and further discloses compositions comprising 100% of 1233zd(Z) and 100% of 1233zd(E), one having ordinary skill in the art would have been motivated to try both compositions as Hulse discloses 1233zd(Z) and 1233zd(E) may be useful in different applications.
Applicant further argues that Hulse does not teach an embodiment in which an aerosol composition consisting only of 1233zd(Z) and nitrogen and/or carbon dioxide is actually tested.
The entire reference must be considered. As stated above, Hulse discloses a composition comprising only 1233zd(Z) (see Example 20, [0022]). Hulse further discloses the method may comprise spraying a metal part utilizing the above solvent as a propellant or pressurized gases, such as nitrogen and carbon dioxide (see [0025]).
The affidavit under 37 CFR 1.132 filed August 21st, 2026 is insufficient to overcome the rejection of claim 1 and claim 2 based upon 35 U.S.C. 103 as being unpatentable over Hulse (US 20140261565 A1) as set forth in the last Office action because the showing is not commensurate in scope with the claims. The affidavit discloses a spray distance of 5cm to 1m. This distance is not disclosed in the claims. Further, the affidavit discloses that the solution remained wet after 10 seconds. This is also not disclosed in the instant claims. Further, as stated above, Hulse discloses the composition evaporates within 30 seconds. This indicates that the composition of Hulse may remain, in a liquid form, on the surface to be cleaned for an extended period of time. The affidavit discloses that the composition comprising 1233zd(E) “quicky evaporated”. However, the affidavit does not disclose what length of time is encompassed by such a statement.
Further, no ingredients are disclosed in the comparative examples nor are concentrations given for the components of the working examples. Without knowledge of the composition of the comparative examples, it is impossible to definitively state a reason for their performance when compared to the working examples. Therefore, it is impossible to state whether or not the disclosed results are unexpected when compared to the comparative examples. Further, the working examples fail to disclose the concentration of (Z)-1-chloro-3,3,3-trifluoropropene and the disclosed propellants. Therefore, the disclosed results cannot be definitively said to be unexpected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY SHARON HARRIS whose telephone number is (571)270-1390. The examiner can normally be reached 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.S.H./ Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/ Supervisory Patent Examiner, Art Unit 1761
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